Intellectual Property Factsheet

Intellectual Property

Intellectual property law is a vital tool in the creation and protection of dynamic business assets and Edwin Coe’s intellectual property team combines dedicated IP specialists and heavyweight litigators.

We provide a full service from the acquisition, exploitation and protection of intellectual property, through to its commercial use and the handling of infringement and other contentious issues

The IP team has considerable expertise in the non-contentious areas of IP, including technology agreements and licences, preparing and negotiating a wide range of commercial contracts and agreements, and advising on IP matters in the context of M&A.

The head of the intellectual property team, Simon Miles, is a solicitor and a UK and European Trademark Attorney. Our team comprises a mix of solicitors and attorneys and as such we are able to offer expert advice in relation to all issues relating to brands.

One of our partners, Nick Phillips, has for many years been an Independent Expert appointed by Nominet to determine domain name disputes.

Our sector experience includes electronics, cosmetics, restaurants, charities and philanthrophy, sport and leisure, IT and media, and art and design.

Our reputation for heavyweight litigation also makes us a popular choice for tricky contentious IP matters.

Typically we advise on:

• Brand protection and exploitation
• Confidentiality and trade secrets
• Copyright and database rights
• Data protection (GDPR)
• Defamation and malicious falsehood
• Design rights and registered designs
• Information technology
• Internet domain names
• Media
• Passing off
• Patents
• Trademarks

Our clients range from large enterprises, to SMEs, charities, individuals and entrepreneurs.

Examples of our work

• We advised Hardware Labs in its dispute with Nvidia Corporation (see [2017] FSR 28) resulting to alleged infringement of trademarks. We successfully struck out Nvidia’s groundless threats case.
• We advise a number of international media agencies in relation to various matters including media services agreements, client agreements for out-of-scope work, creative services agreements, data licences, sponsorship agreements, live event agreement and non disclosure agreements.
• We advised a pet food manufacturer in the High Court regarding trademark and passing off proceedings against a competitor.
• We advised a multinational water company in relation to its worldwide patent litigation. We have been working with US advisers in relation to resisting a motion in the US for discovery and depositions based on UK infringement proceedings. We have also been instructed by this client in relation to the patent infringement proceedings in the UK.
• We advise an international cosmetics company on many ongoing issues including a brands dispute in the US with another cosmetics company over alleged infringement of rights in the shape of a container, clearing the shape of a distinctive new product bottle on a worldwide basis and advising on a refresh of the brand.
• We advise a multinational organisation with interests around the world on its data protection compliance and the steps that needs to take to comply with the GDPR.
• We advised a European sports apparel exclusive licensee on a multi-jurisdictional litigation with a well-known sports brand in relation to various causes of action relating to breaches of an exclusive trademark licence agreement.
• We advise a well-known business on a number of aspects of US trade mark portfolio including successfully bringing a complaint under Nominet’s DRS to recover a number of UK domain names.
• We advised a famous travel wesbite on the sale of its car-hire broker business to a competitor including the IP aspects of the transaction.
• We advised a well-known media content regulator in a trade mark and copyright infringement and passing off dispute against a regulator in a related field.
• We advised a restaurants group on the acquisition of 85 restaurants including those operating under a famous British brand. We manage the international trademark and designs portfolio.
• We work with the Design and Artists’ Copyright Society (DACS). The firm is on the DACS panel of recommended firms, acting for its members. DACS is the largest royalty fee collection society for artists, collecting revenues for many well-known names from the art world. The firm regularly acts for artists and designers on intellectual property, litigation and private client matters.
• We acted in the reported case (A Grisbrook v MGN Ltd and Others) for photographer Alan Grisbrook, who took many of the iconic images of the early ‘80s for a number of newspapers, including Mirror Group Newspapers (MGN). Mr Grisbrook successfully sued MGN in the 1990s after he found that they had infringed his copyright, but discovered in 2009 that it had placed his photographs on an electronic database with a view to selling them. Edwin Coe acted on his successful application for contempt regarding breach of the earlier order.
• We advise a well-known boutique international licensing agency on the exploitation and protection of intellectual property rights and management of its representative international trademark portfolios. The agency is the exclusive licensing agent for many famous childrens brands.
• We advise one of the UK’s largest online dating companies on a range of matters including on its worldwide portfolio of trademarks, trademark and copyright disputes and in relation to a number of commercial agreements and data protection issues.
• We advise an internet television provider on a range of matters including a dispute with a major European broadcaster.
• We advise a major restaurant chain on its trademark portfolio and related intellectual property rights.

We are ranked in the Legal 500 UK directory for our IP expertise, with Simon Miles additionally recommended in Chambers UK.